About the authors:
Jonathan Foster is a patent attorney in Appleyard Lees’ Leeds office.
With an interdisciplinary background, Jonathan helps his clients to think more broadly about their technologies, to identify their applicability to different fields.
Jonathan’s work involves drafting and prosecuting patent applications for mechanical and electronic inventions across various jurisdictions.
James Clegg is a trainee patent attorney in Appleyard Lees’ Manchester office, working towards his UK and European patent examinations.
James holds a first class Master of Chemistry degree (MChem) from the University of York. His masters project focused on synthesis and expansion of medium-sized organic rings. James’ work in industry included significant synthetic contributions to oncological drug discovery projects.
In T 1688/20, the Board of Appeal has deviated from novelty criteria with respect to selection inventions as set out in the EPO guidelines for examination (G-VI, 8, ii), in favour of applying the “Gold Standard” test of novelty. This decision may be useful when arguing novelty in examination and opposition proceedings.
Inventions involving the selection of a numerical sub-range from a broader, priorly disclosed range are subjected to specific tests before the EPO when determining novelty.
These tests are set out in the EPO guidelines for examination (G-VI, 8, ii).
For a sub-range selected from a broader numerical range to be considered novel (i.e., a selection invention), it must be:
1. Narrow compared to the known range; and
2. Sufficiently far removed from any specific examples disclosed in the prior art.
The meaning of “narrow” and “sufficiently far removed” is decided on a case-by-case basis.
For many years (pre-2019) there was a third criterion requiring that the selection must not be arbitrary i.e.: the claimed subrange must be related to a technical effect (“purposive selection”). This was thus known as the “three-step” approach. Following T 261/15 the third criterion was removed from the guidelines as it was considered more akin to an assessment of inventive step.
First instance decision
T 1688/20 relates to an appeal by the patentee of an Opposition Division’s decision to revoke patent EP3056283 on the grounds of lack of novelty.
The patent in question related to an applicator for the rapid painting of cars. Claim 1 of the patent specified the applicator possessed the feature “atomization air… is twisted… at an angle of 56 degrees or more and 59 degrees or less”. The prior art cited during opposition disclosed a twist angle range of 50 to 60 degrees for an equivalent device.
The Opposition Division therefore needed to decide whether 56 to 59 degrees is novel in view of a disclosure of 50 to 60 degrees.
Applying the above “three-step” test, the Opposition Division found that claim 1 of the opposed patent did not satisfy any of the three criteria and thus was not novel. Hence, the patent was revoked.
The applicator of the patent in question:
Prior to oral proceedings, the Board of Appeal issued a preliminary opinion that, when applying the same test as above, the sub-range 56 to 59 degrees was in fact novel over 50 to 60 degrees, based on the same facts.
However, at oral proceedings, the Board rejected the “three-step” approach entirely and stated that the terms “narrow” and “sufficiently far removed” referred to in the test did not provide objective, consistent criteria for establishing novelty, and were open to broad interpretation.
The Board instead considered that the appropriate approach for assessing novelty should always be the application of the EPO’s “gold standard”. Under this approach a finding of lack of novelty over a prior disclosure requires a feature to be directly and unambiguously derivable in the prior art by a skilled person using common general knowledge.
Using this approach, the Board considered that 50 to 60 degrees did not directly and unambiguously disclose 56 to 59 degrees. Therefore the latter narrower range was found to be novel (and inventive). The decision of the Opposition Division was overturned, and the patent reinstated.
In their reasoning, the Board referred to caselaw (including G1/03, G2/10 and G1/16), which established that the concept of what is considered to be disclosed in a document should be the same for added matter (Art. 123(2) EPC) and for novelty (Art. 54 EPC). They further commented that the various tests for novelty that have been developed for different types of amendments are meant to provide an indication of whether an amendment complies with Art. 123(2) EPC as interpreted according to the “gold standard” and should not lead to a different result.
The logic of this decision could also be applied to establish novelty for other selection inventions where additional criteria beyond the “gold standard” also exist in the guidelines, such as a selection from lists (“two list principle”) and overlapping ranges (“serious contemplation”).
The finding in T1688/20 could be construed as loosening the requirements for establishing novelty before the EPO. It remains to be seen whether other Boards follow this approach and abandon novelty criteria set out in the Guidelines.
However according to this decision the gold standard test maintains its supremacy at the EPO.